national arbitration forum

 

DECISION

 

Lockheed Martin Corporation v. Jeff Hoffman

Claim Number: FA0612000874152

 

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Susan Okin Goldsmith, of Duane Marris LLP, 744 Broad Street, Suite 1200, Newark, NJ 07102.  Respondent is Jeff Hoffman (“Respondent”), represented by Gregory A. Stevens, of Moore & Van Allen, PLLC, 430 Davis Drive, Suite 500, Morrisville, NC 27709.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nuanceskunkworks.com>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.

 

On December 21, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <nuanceskunkworks.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nuanceskunkworks.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nuanceskunkworks.com> domain name is confusingly similar to Complainant’s SKUNK WORKS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nuanceskunkworks.com> domain name.

 

3.      Respondent registered and used the <nuanceskunkworks.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Lockheed Martin Corporation, is the owner of the SKUNK WORKS mark, which is registered in numerous foreign jurisdictions and with the United States Patent and Trademark Office (“USPTO”) (including, but not limited to, Reg. No. 1,161,482, issued July 14, 1981, and Reg. No. 2,652,258 issued November 19, 2002).  The SKUNK WORKS mark has been in continuous use in commerce by Complainant and its predecessors in interest since the mid-1940s.  Complainant owns approximately two hundred domain names incorporating the SKUNK WORKS mark or a phonetic variant of the mark, including <skunkworks.com>, <guitarskunkworks.com>, and <germanskunkwerks.com>.

 

Respondent, Jeff Hoffman, registered the disputed <nuanceskunkworks.com> domain name on March 22, 2006.  The domain name currently resolves to a generic placeholder and offers no substantive content.  The placeholder page indicates that the website is “coming soon” and states, “[t]his is the placeholder page installed by default on every new TextDrive web site, and will be replaced by the owner of the site eventually.”  To date, Respondent has not made use of the <nuanceskunkworks.com> domain name; however, upon Complainant’s information and belief, Respondent plans to use the disputed domain name in connection with a web application development business.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the SKUNK WORKS mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

In registering its <nuanceskunkworks.com> domain name, Respondent merely added the generic term “nuance” to Complainant’s entire SKUNK WORKS mark.  Respondent made no further attempt at distinguishing the domain name from the famous SKUNK WORKS mark.  Such action is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed <nuanceskunkworks.com> domain name.  Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, despite the presumptive effect of Respondent’s inaction, the Panel chooses to analyze the relevant factors under Policy ¶ 4(c).

 

In connection with registering the disputed <nuanceskunkworks.com> domain name, Respondent initially utilized a proxy registrant, Domains by Proxy.  Presumably this method of registration was motivated either by Respondent’s concern for protecting his privacy or by Respondent’s desire to conceal his true identity.  In any event, listing a proxy registrant or himself as the registrant is inconsistent with an assertion that Respondent is commonly known by the disputed <nuanceskunkworks.com> domain name.  While the record clearly indicates that Respondent performed this mandatory and perfunctory task of registration, it is void of any other attempt by Respondent to establish that he is commonly known by the disputed domain name, or any variation thereof.  Indeed, given the fame and notoriety of Complainant’s SKUNK WORKS mark, Respondent must put forth strong evidence to prevail on this argument.  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).  This has simply not been done here.  As such, Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Similarly, the record here is void of any attempt by Respondent to use the <nuanceskunkworks.com> domain name in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii), or in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  As of the filing date of the instant complaint, Respondent has not even setup a web page in connection with the disputed domain name.  At least one Panel has held that when the respondent declares such intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’”  Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). 

 

Here, the disputed <nuanceskunkworks.com> domain name merely resolves to a generic placeholder offering no substantive content.  This placeholder page has remained unchanged since being posted on or around April 17, 2006.  Such inaction on behalf of Respondent is inconsistent with the demonstrable evidence of preparations to use the domain name required by Policy ¶4(c)(i).  See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (“While Respondent’s June 14, 1999, e-mail message makes reference to its ‘global long-term development and communication plans,’ there is no evidence in the record to support a determination of Respondent’s 'use of, or demonstrable preparations to use,' the domain name, within the meaning of [Paragraph 4(c)(i)] of the Policy.”).  Even if Respondent’s vague assertions of a business model were accepted as “demonstrable evidence of preparations,” Respondent, through his representative, only expressed the intent to “keep and defend the nuanceskunkworks.com web-site” and “begin developing [Respondent’s] business using the web-site” until some three to four months after being notified of Complainant’s rights in the SKUNK WORKS mark (emphasis added).  A reactionary business model such as Respondent’s, which merely alluded to a business model once it received Complainant’s “cease and desist” letter, precludes the Panel from finding that Respondent possesses any rights or legitimate interests in the disputed <nuanceskunkworks.com> domain name pursuant to Policy ¶4(c)(i).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s “cease and desist” notice); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).  From a practical standpoint, such a course of action is hardly an efficient use of the disputed domain name.  See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise). 

 

The Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to the Policy.  In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  As such, Complainant has satisfied policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s bad faith in the instant case is axiomatic when considering Respondent’s non-use of the disputed <nuanceskunkworks.com> domain name, his failure to develop the site in any substantive manner, and the reasonable inference that Respondent only chose the disputed domain name in an effort to capitalize on Complainant’s goodwill associated with its SKUNK WORKS mark.  See TV Globo Ltd. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) the respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s famous GALLO marks and (2) the respondent made no use of the domain name <winegallo.com>).  In fact, the failure to use a domain name may, in and of itself, establish bad faith under the Policy.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and has thus satisfied the requirements of Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nuanceskunkworks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  January 31, 2007

 

 

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